Re: [gtld-council] NCUC proposals to amend gnso recommendations on new gtld policy
- To: robin@xxxxxxxxxxxxx
- Subject: Re: [gtld-council] NCUC proposals to amend gnso recommendations on new gtld policy
- From: Liz Williams <liz.williams@xxxxxxxxx>
- Date: Tue, 5 Jun 2007 01:15:20 +0200
Thanks for this ongoing debate. Do you have any other examples that
would help the discussion outside the US? Not all countries have any
First Amendment-like rights and it would be useful to have this
discussion on a broader basis.
Senior Policy Counselor
ICANN - Brussels
+32 2 234 7874 tel
+32 2 234 7848 fax
+32 497 07 4243 mob
On 05 Jun 2007, at 01:08, Robin Gross wrote:
Well US courts have consistently disagreed with your view and ruled
that there are numerous lawful uses of a trademark in a domain name
by someone other than a trademark holder. Trademark law has never
granted a monopoly on language. It only regulates specific uses of
words or symbols, and only commercial uses. Non-commercial
expression is not regulated by trademark rules under the law.
One of the most cited US legal precedents to examine the boundary
of free expression rights and trademark rights is Taubman v.
Webfeats 319 F.3d 770 (6th Circuit 2003), an early "cyber-gripe
case". The court explained, "we will first explain the
interrelation between the First Amendment and the Lanham Act. ...
The Lanham Act is constitutional because it only regulates
commercial speech, which is entitled to reduced protections under
the First Amendment." In Taubman the appellate court held that
many expressions of a mark were not a 'trademark use' and not
likely to cause confusion and therefore "outside the jurisdiction
of the Lanham Act and necessarily protected by the First Amendment."
The 6th Circuit spoke directly to our issue, "The rooftops of our
past have evolved into the Internet domain names of our present.
We find that the domain name is a type of public expression, no
different in scope than a billboard or a pulpit, and [defendant]
has a First Amendment right to express his opinion about
[plaintiff], as long as his speech is not commercially misleading,
the Lanham Act cannot be summoned to prevent it." Taubman
explicitly held there First Amendment protection to use a trademark
in a domain name to criticize a business. See:
Another US circuit, the 9th, has also set similar precedent in
Bosley Med. Inst. v. Kremer, 403 F.3d 672 (9th Cir. 2005) over a
non-commercial gripe-site using a trademark in its domain name.
Again the court agreed that the non-commercial expression of
opinion was not a "trademark use" subject to regulation by the mark
holder. "[Defendant] is not [plaintiff's] competitor; he is their
critic. His use of [plaintiff's] mark is not in connection with a
sale of goods or service - it is in connection with the expression
of his opinion about [plaintiff's] goods and services. [Plaintiff]
cannot use the Lanham Act either as a shield from ... criticism, or
as a sword to shut [defendant] up."
The US 2nd Circuit has also provided strong protection for
noncommercial speech and recognized that words and phrases are used
in many different ways in a digital environment, to serve differing
goals, and that not all of these uses are controlled by trademark
law. In 1-800 Contacts v. WhenU.com 414 F3d 400 (2d Cir. 2005),
the 2nd Circuit ruled that the vast majority of such uses were
outside the scope of trademark law and only those specific uses
visually associated with the sale of goods/services could be
regulated by trademark. See:
So the US law is clear in permitting numerous non-commercial uses
of a trademark in a domain name, to discuss, criticize, compare,
provide general information about a company or product. Freedom
of expression is a legally recognized value that trademark rights
do not supersede. The current gnso draft recommendations diverge
significantly from the law on this point.
Mike Rodenbaugh wrote:
I disagree with the NCUC's suggested change to Reco #3. There are
numbers of 2d and higher lever domains that can be used for
expression, with exponentially more to come. NCUC seems to
some prospective TLD operator would want to run an entire TLD full of
gripe sites as to one trademark. Such a business would not be
under the guise of 'freedom of expression' under any nation's law
am aware of.
The current Reco is tied to a core ICANN value of protecting security
and stability. If a TLD corresponding to a well-known trademark were
awarded to any entity other than the trademark owner, it is highly
likely that many users would be confused and placed at higher risk of
crime through activity at that TLD. This is the same security and
stability concern that underlies the UDRP, as to 2d level and higher
Sr. Legal Director
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[mailto:owner-gtld-council@xxxxxxxxxxxxxx] On Behalf Of Robin Gross
Sent: Saturday, June 02, 2007 10:23 AM
Subject: [gtld-council] NCUC proposals to amend gnso
new gtld policy
NCUC has developed 5 new proposals to amend the draft gnso
recommendations on new gtld policy.
These proposals are meant to give some recognition to freedom of
expression values in our recommendations. The proposals also
address concerns about ICANN becoming enmeshed in national policy
debates and would keep the Internet core neutral of such conflicts.
The 5 proposals are not meant to be accepted only as a package,
but should be considered individually also.
NCUC proposals to amend draft GNSO recommendations:
I welcome an opportunity to discuss the amendments at greater
will try to answer any questions you may have on them.
Thank you for considering them.